The Law Firm of Louis Ventre, Jr. Registered Patent Attorney INFRINGEMENT DAMAGES Add Site to Favorites

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Patent Infringement Damages.  Lost profits or reasonable royalties are damages available for patent infringement.  Interest on the damages can often be as much as the damages.  Lost profits assumes that the patent owner is selling the patented item, that he could have met the demand in the lost market, and that the patent owner can determine with reasonable probability how much profit would probably have been made if there was no infringement.  Reasonable royalties are available when that amount would be more than lost profits or if lost profits cannot be proved.  Enhanced or punitive damages of three times the award are available for willful infringement, see below. The Law.  Damages for patent infringement are governed by the United States Code.  Section 284 of title 35 provides---   "Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court." Judicial Interpretation. The United States Supreme Court interpreted the law as follows: "[T]he present statutory rule is that only 'damages' may be recovered. These have been defined by this Court as 'compensation for the pecuniary loss he [the patentee] has suffered from the infringement ....' They have been said to constitute "the difference between his pecuniary condition after the infringement, and what his condition would have been if the infringement had not occurred." Aro Mfg. Co. v. Convertible Top Co., 377 U.S. 476, 507 [141 USPQ 681] (1964) (citations omitted). Damages are not the Infringer's Profits.  The Aro decision further made clear that infringement damages are not determined by the infringer's profits, but by the loss to the patent owner.   "But the present statutory rule is that only 'damages' may be recovered. These have been defined by this Court as 'compensation for the pecuniary loss he [the patentee] has suffered from the infringement, without regard to the question whether the defendant has gained or lost by his unlawful acts." Aro at 506 (citations omitted). However, the district court's use of an infringer's profit margin for comparison purposes in determining the reasonableness of a patent owner's estimate of lost profits did not constitute an abuse of discretion.  Kori Corp. v. Wilco Marsh Buggies and Draglines, Inc., 761 F.2d 649 (Fed.Cir.1985). . Damages are Lost Profits or Reasonable Royalty.  In the relatively famous instant-camera infringement case of Polaroid Corp. v. Eastman Kodak Co., the United States District Court for the District of Massachusetts explained that there are two ways to calculate damages.  The first and preferred method is lost profits.  The second is reasonable royalty.   16 USPQ 2d 1481, 1484 (1990). "The general rule for determining the actual damages to a patentee that is itself producing the patented item, is to determine the sales and profits lost to the patentee because of the infringement.  Although the statute states that the damage award shall not be 'less than a reasonable royalty,' 35 U.S.C. § 284, the purpose of this alternative is not to provide a simple accounting method, but to set a floor below which the courts are not authorized to go." (citation omitted). Enhanced Damages.  When clear and convincing evidence is presented that an infringer acted willfully to infringe a patent, the law permits "increased damages up to three times the damage amount found or assessed."  Willfulness requires proof that the infringer knew about the patent, deliberately disregarded the patent or patent laws, and had no reasonable basis for believing it had the right to act as it did. Attorney fees may also be awarded in "exceptional" cases pursuant to section 285 of title 35 of the United States Code.  Attorney fees are most often awarded when the degree of culpability of an  infringer is very clear from the start or if it was obvious the defendant wasn't an infringer from the start, or where litigation behavior on the part of a party stretches the rules.  However, exceptional circumstances often require a finding of gross unfairness, or bad faith on the part of a party. If the patent owner loses the suit because of inequitable conduct in acquiring the patent, the patentee could be liable for attorney fees and lose his patent. Inequitable conduct involves lying to the Patent Office or concealing prior art, or not telling the Patent Office of some event that would have precluded issuance of the patent.   In most cases, proving exceptional circumstances is difficult and a very high hurdle. So, attorney fees are not usually awarded.  An August 10, 2006 decision of United States Court of Appeals for the Federal Circuit denying attorney fees discusses exceptional circumstances for awarding attorney fees, Serio-Us Industries, Inc. v. Plastic Recovery Technologies, Corp., (05-1106, -1143, -1306). Recent Developments in the law.  The Court of Appeals for the Federal Circuit has altered the landscape of the law on infringement damages and is generally considered to have made damages more rational and related to the loss sustained and limited windfalls to the patent owner. A first example is Uniloc USA, Inc. v. Microsoft Corp., decided 04-JAN-2011 (2010-1035, -1055), wherein the Federal Circuit held that there is no rule of thumb that 25% of the expected profit rate would be an assumed baseline license rate when calculating patent infringement damages. Citing others, the Federal Circuit observed: "([The 25 percent rule] takes no account of the importance of the patent to the profits of the product sold, the potential availability of close substitutes or equally noninfringing alternatives, or any of the other idiosyncrasies of the patent at issue that would have affected a real-world negotiation. . . it fails to 'distinguish between monopoly and normal profit. . . ." The court held: "This court now holds as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue." A second example is Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009), wherein the Federal Circuit reiterated that "The second Georgia-Pacific factor is '[t]he rates paid by the licensee for the use of other patents comparable to the patent in suit.' 318 F. Supp. at 1120." The court stated that the claimant must "prove that the licenses relied on were sufficiently comparable" to what would prevail in the hypothetical royalty negotiation in order to be usable for purposes of damages calculation in an infringement damages calculation. And a third example is In re Seagate, 497 F. 3d 1360 (Fed. Cir. 2007, where the Federal Circuit held that in order to support an award of special damages (treble damages), one must proove "willful infringement . . . [with] at least a showing of objective recklessness." Kodak Case Damages.  The court in the Polaroid v. Kodak case awarded $454 million in lost profits and $455 million in interest for a total of $909 million.  No punitive damages, costs or counsel fees were awarded.  Correction of calculational  errors and post judgment interest later raised the total amount received by Polaroid to $924.5 million. Other related pages that may be of interest are patent infringement opinions and pharmaceutical importation and infringement. Home | How to Communicate | Email to: lventre@lventre.com | Useful Links Client Inventions | Bio | FAQs | Disclaimers Search Click Here to Fill-In a Web Form Email © 2005 Louis Ventre, Jr. This file last modified 07/09/11. 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